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Law School Case Brief

In re Glass - 492 F.2d 1228 (C.C.P.A. 1974)

Rule:

The filing date becomes a date of constructive reduction to practice in determining priority of invention and this should not be the case unless at that time, without waiting for subsequent disclosures, any person skilled in the art could practice the invention from the disclosure of the application. If information to be found only in subsequent publications is needed for such enablement, it cannot be said that the disclosure in the application evidences a completed invention.

Facts:

John Glass sought review of the decision of the Patent Office Board of Appeals, which affirmed the rejection of all of his patent claims for an apparatus and method used for growing crystals. The board of appeals affirmed the rejection on lack of specification and enablement grounds of all of Glass’ patent claims. Glass challenged the decision, arguing that his specifications were sufficient to enable those skilled in the art to practice his invention.

Issue:

Can later-issued patents be considered in judging the sufficiency of Glass’ specifications?

Answer:

No

Conclusion:

The court upheld the decision of the board. The court rejected Glass’ argument that he should be able to refer to certain patents filed before his but issued later than his to show the state of the art for enablement purposes under 35 U.S.C.S. § 112. The court held that the sufficiency of Glass’ specifications had to be judged as of his filing date, and therefore the later-issued patents could not be considered. Based on Glass’ filing date, the court found that the claims were so vague as to fail the enablement requirement.

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